Donald Wheatley et al.

Patent Trials and Appeals Board

Sep 22, 2020

2019006600 (P.T.A.B. Sep. 22, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/212,151 09/17/2008 Donald E. Wheatley 8454-000004/US 9803
27572 7590 09/22/2020
HARNESS DICKEY (TROY)
5445 Corporate Dr.
Suite 200
Troy, MI 48098
EXAMINER
ADAMOS, THEODORE V
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
09/22/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
sto-ptomail@hdp.com
troymailroom@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DONALD E. WHEATLEY and TODD JACKSON
____________

Appeal 2019-006600
Application 12/212,151
Technology Center 3600
____________

Before STEFAN STAICOVICI, LEE L. STEPINA, and
ERIC C. JESCHKE, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated Dec. 19, 2017, hereinafter “Final
Act.”) rejecting claims 6–15, 17–20, and 24–27.3 Appellant’s representative

1 This is Appellant’s second appeal before the Patent Trial and Appeal
Board. In the first appeal (2014-004773, Decision mailed July 5, 2016,
hereinafter “Decision”), the rejection under 35 U.S.C. § 102(b) of claims
11–13, 19, and 20 was reversed and the rejections under 35 U.S.C. § 103(a)
of claims 11–15 and 17–20 were affirmed. Decision 10–11.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Fortress Stabilization Systems is identified as the real
party in interest in Appellant’s Appeal Brief (filed Apr. 18, 2018, hereinafter
“Appeal Br.”). Appeal Br. 2.
3 Claims 1–5, 16, and 21–23 are canceled. Final Act. 2.
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presented oral argument on September 1, 2020. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE.

INVENTION
Appellant’s invention is directed “to a system and method for wall
reinforcement.” Spec. para. 2.
Claims 6, 11, and 20 are independent. Claim 6 is illustrative of the
claimed invention and reads as follows:
6. A structure, comprising:
a concrete block wall;
a support member formed from lumber and supported on
top of said concrete block wall and disposed above said
concrete block wall;
a bracket having a base portion secured directly to said
support member by at least one fastener at a location above said
concrete block wall and including a strap support portion
connected to said base portion, wherein the bracket is disposed
above said concrete block wall; and
a flexible strap having a length dimension and a width
dimension, said length dimension being greater than said width
dimension, said flexible strap including first and second end
portions along said length dimension and an intermediate
portion disposed between said first and second end portions
along said length dimension, said intermediate portion being
wrapped directly around said strap support portion at a location
above the concrete block wall, at least one of said first and
second end portions being secured to an inside face of said
concrete block wall by an adhesive.

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REJECTIONS
I. The Examiner rejects claims 6–9, 11–14, 17–20, and 24–27
under 35 U.S.C. § 103(a) as being unpatentable over Morton4
and Platts.5
II. The Examiner rejects claims 10 and 15 under 35 U.S.C.
§ 103(a) as being unpatentable over Morton, Platts, and
Swallow.6

ANALYSIS
Rejection I
The Examiner finds Morton’s embodiment illustrated in Figures 20
and 21 includes, inter alia, a concrete block wall constructed from concrete
blocks B, a support member formed by joists 304 and wooden blocks, a
bracket 300 secured by bolts to the support member, and a pre-cured
reinforcing strap (plate) 302 secured to an inside face of blocks B by an
adhesive. Final Act. 3–4 (citing Morton, col. 8, ll. 10–13, 26–38, Figs. 20,
21). The Examiner further finds that Morton discloses the use of flexible
fabric straps 221, 223, 225, and, in particular, discloses the use of in-situ
composite reinforcing members as an alternative to pre-cured reinforcing
plates 302 of the embodiment illustrated in Figures 20 and 21. Id. at 4–5
(citing Morton, col. 10, ll. 39–47; Decision 5–6); see also Morton, col. 17, ll.
1–7, 38–44, 61–67, Figs. 15, 16. Thus, the Examiner determines that it
would have been obvious for a skilled artisan to replace reinforcing strap

4 Morton, US 6,418,684 B1, issued July 16, 2002.
5 Platts, US 2006/0254193 A1, published Nov. 16, 2006.
6 Swallow, US 5,820,958, issued Oct. 13, 1998.
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(plate) 302 of Morton’s embodiment illustrated in Figures 20 and 21 with a
flexible strap fiber composite strap because:
(1) Morton discloses the use of in-situ composite reinforcing members
as an alternative to pre-cured reinforcing plate 302;
(2) transporting flexible reinforcing members to the job site is easier;
and
(3) choosing a material based on its suitability for an intended use is
an obvious matter of design choice. Id. (citing In re Leshin, 277 F.2d 197,
199 (CCPA 1960)).
The Examiner further finds that although Morton does not disclose
wrapping the strap “directly around” a strap support portion of a bracket,
nonetheless, Morton “does disclose that alternat[ive] connectors could be
used in place of bracket #300.” Id. at 5 (citing Morton, col. 8, ll. 6–25). As
an illustration of such an “alternat[ive] connector,” the Examiner turns to
Platts’ bracket 44, for attaching strap 30 to frame member 16 above wall 24,
by looping strap 30 through slot 46 and around pin element 36. Id.; see also
Platts, Figs. 1, 2. Thus, the Examiner concludes that
it would have been obvious to a person of ordinary skill in the
art at the time the invention was made to have used a bracket
which comprises of an elongate aperture within the strap
support portion, as taught in Platts, within the invention of
Morton such that an intermediate portion of the strap of Morton
is received within the aperture and is directly wrapped around
the strap support portion in order to provide a stronger
connection between the floor joist of the structure and the
flexible strap being used, where such a substitution of one
bracket for another would have yielded predictable results of
securing a reinforcing strap to a support member.

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Id. at 6 (emphasis added) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398
(2007)).
Appellant argues that the Examiner’s “modification of Morton in view
of Platts requires a modification of the reinforcing plate 302 to be a flexible
strap and a modification of the connector 300” to be replaced by Platts’
bracket 44 and pin 36 “to receive the flexible strap,” and, thus, the
“modifications change the structure, function and principle of operation of
the system of Morton.” Appeal Br. 10–11. Appellant contends that because
the Examiner’s rejection “replac[es] the fabric members of Figure[] 16 for
the plates 302 of Figure 20 [of] Morton . . . and further modif[ies] the
connector 300 with the bracket [44 and pin 36] of Platts,” the resulting
system of Morton, as modified by Platts, “modifies every element of the
system 300, 302 of Morton . . . beyond recognition.” Reply Brief (filed
Sept. 5, 2019, hereinafter “Reply Br.”) 15. Thus, according to Appellant,
“the system of Morton as modified by the Examiner [according to Platts] has
no remaining resemblance to the disclosure of Morton,” and, therefore, the
Examiner’s rejection “relies upon impermissible hindsight.” Appeal Br. 11;
Reply Br. 15.
In response, the Examiner takes the position that “[t]he rejections
based on Morton in view of Platts . . . use the same type of modifications
and same reasoning . . . to meet each and every feature of the claimed
invention that were similarly used in Appeal 2014-004773 and Affirmed by
the Board in the Decision.” Examiner’s Answer (dated July 19, 2019,
hereinafter “Ans.”) 4. In particular, the Examiner notes that the instant
rejection
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only replaces the connection bracket [of] secondary reference of
Oliv[]er7 with that of the connection bracket [of] secondary
reference of Platts, where the . . . [resulting] structures of
Morton in view of Oliv[]er and Morton in view of Platts would
each comprise of a flexible strap which comprises of a looped
portion that engages a bracket.

Id. at 8. Thus, according to the Examiner, because in the instant rejection
“the same modifications . . . are provided again using the structure and
placement of the bracket of Platts as the secondary reference instead of
Oliv[]er, the Board decision must be applied to the present rejection[].” Id.
at 9 (emphasis added).
We do not agree with the Examiner’s position that “Appellant is
reiterating the same arguments as were provided in Appeal 2014-004773,
which the Board has already ruled upon and deemed unpersuasive.” Ans. 4
(emphasis added). In particular, the arguments noted above were not
presented in Appeal No. 2014-004773, and, thus, the Board could not have
considered them. See Decision 7–10. Accordingly, in light of Appellant’s
newly presented arguments and evidence in the form of a Declaration filed
under 37 C.F.R. § 1.132 by Richard E. Prince, PE (filed Jan. 31, 2018,
hereinafter “Prince Decl.”), we find the Examiner’s rejection untenable for
the following reasons.
In particular, Morton discloses a wall reinforcing system and method
for strengthening subterranean walls to resist lateral forces using connector
300 (bracket) seated against pre-cured plates 302 or, in the alternative, in
situ formed fiber reinforced straps, which are adhesively bonded to the
inside surface of the wall. Morton, Abstract, col. 2, ll. 62–65, col. 3, ll. 1–8,

7 Oliver et al., US 6,725,613 B2, issued Apr. 27, 2004.
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46–54, col. 8, ll. 10–16, 30–32, col. 10, ll. 40–47 (“In addition to the use of
pre-cured reinforcing members, such as pre-cured plates [302], it is also
contemplated that reinforcing members can be formed in situ . . . by
combining reinforcing fibers with an uncured polymer.”), Figs. 20, 21;
Prince Decl. para. 8. In contrast, Platts discloses a system and method for
reinforcing roof frame structure to resist windstorm uplift (vertical) forces
using metallic connector 30 (strap) having an upper end 34 looped through
slot 46 and over pin 36 of load distribution plate 44 (bracket). Platts,
Abstract, paras. 10, 24, 26, Fig. 2; Prince Decl. para. 13. In other words,
Morton’s connector 300 (bracket) is employed in combination with in situ
formed fiber reinforced straps to resist lateral forces acting on vertical
subterranean walls, whereas Platts’ slotted bracket 44 is used in
combination with pin 36 and a metallic connector 30 to generate a
downward force to resist windstorm uplift (vertical) forces acting on a roof
structure. Compare Morton, Fig. 1 (lateral force exerted by earth E), with
Platts, Fig. 2 (restraining force 62a resists uplift vertical force 60). We, thus,
agree with Appellant that the connector 300 of Morton and the bracket
assembly formed by bracket 44 and pin 36 of Platts “operate in entirely
different ways, resist different forces, and perform different functions.”
Prince Decl. para. 15; see also Appeal Br. 13; Reply Br. 17.
As such, in light of the different operational features of Morton’s
connector 300 (bracket) and Platts’ bracket assembly 44, 36, it is not clear
from the Examiner’s rejection why a person of ordinary skill in the art would
replace Morton’s connector 300 with Platts’ bracket assembly 44, 36. Just
because the Examiner’s rejection demonstrates that Morton’s connector 300
and Platts’ bracket assembly 44, 36 are known in the prior art and can be
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substituted for one another, is not, in itself, a reason to combine the
teachings of Morton and Platts. Rather, an obviousness rejection must
further explain the reasoning by which those findings support the
Examiner’s conclusion of obviousness. Perfect Web Techs., Inc. v. InfoUSA,
Inc., 587 F.3d 1324, 1328–30 (Fed. Cir. 2009). Here, the Examiner’s
conclusion that the substitution of Platts’ bracket assembly 44, 36 for
Morton’s connector 300 “would have yielded predictable results of securing
a reinforcing strap to a support member” says essentially that the substitution
would have been obvious because Platts’ bracket assembly 44, 36 was
merely a known element to secure a strap. See Final Act. 6.
In addition, the Examiner’s rejection fails to adequately explain why a
skilled artisan would substitute Platts’ bracket assembly 44, 36 for Morton’s
connector 300 in order to achieve a “stronger connection between a floor
joist of the structure and the flexible strap being used.” See id. (emphasis
added). In particular, the Examiner does not sufficiently explain why a
skilled artisan would desire a “stronger connection” between Morton’s joists
304 and in situ formed fiber reinforced straps. The Examiner has not
provided any findings that Morton recognized a problem with seating
connector 300 against the upper end of the in situ formed fiber reinforced
straps and holding them tightly against the wall in order to resist lateral
loads. As discussed supra, Platts’ bracket assembly 44, 36 generates a
downward restraining force 62a; however, the Examiner has not provided
any findings that Morton recognized a problem with uplift vertical forces
that would require generating a downward restraining force, as per wrapping
Morton’s in situ formed fiber reinforced straps around pin 36 of Platts’
bracket assembly 44, 36 to generate a restraining force 62a. See Platts, Fig.
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2; see also Prince Decl. para. 10 (describing Appellant’s invention as
increasing the downward load on a concrete block wall). Moreover, the
Examiner does not sufficiently explain how a skilled artisan would fix
Platts’ pin 36 and bracket 44 to Morton’s joists 304 such that Morton’s in
situ formed fiber reinforced straps would wrap around Platts’ pin 36 and
pass through slot 46 of bracket 44.
In conclusion, the Examiner’s rejection is not a mere substitution of
one bracket for another in similar applications, and, thus, does not constitute
an obvious selection between indisputably known bracket alternatives and
the application of routine technical skills. See KSR, 550 U.S. at 417. We,
thus, agree with Appellant that the Examiner’s “modification of the
connector 300 of Morton to the complex connector {26, 44, 46, 36} of Platts
is not rational.” Appeal Br. 12.
Accordingly, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 103(a) of claims 6–9, 11–14, 17–20, and 24–27 as
unpatentable over Morton and Platts.

Rejection II
The Examiner’s use of the Swallow disclosure does not remedy the
deficiency of the Morton and Platts combination discussed supra. See Final
Act. 18–19. Therefore, for the same reasons discussed above, we also do not
sustain the rejection of claims 10 and 15 over the combined teachings of
Morton, Platts, and Swallow.

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CONCLUSION

Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
6–9, 11–14,
17–20, 24–27
103(a) Morton,
Platts
6–9, 11–14,
17–20, 24–27
10, 15 103(a) Morton,
Platts,
Swallow
10, 15
Overall
Outcome
6–15, 17–20,
24–27

REVERSED